• Delta Electronics, Inc. v. Vicor CorporationInstitution denied
  PTAB · May 17, 2024 · IPR2024-00134 · APJ Georgianna W Braden · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged, undisclaimed claim was unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute inter partes review on any of the alleged grounds of unpatentability.” slip op. at 2

  • Adverse judgmentAdverse judgmentOther

    “it filed with the Office a statutory disclaimer of claims 22, 24, 39, and 40 of the challenged patent pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2028, 1; see Prelim. Resp. 7 n.1. The disclaimer of a claim “shall . . . be considered as part of the original patent.” 35 U.S.C. § 253(a). The language “considered as part of the original patent” means that a patent subject to a disclaimer under § 253(a) “is treated as though the disclaimed claims never existed.” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”) (citing Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 492 (1935)); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (holding that the Board’s interference jurisdiction under 35 U.S.C. § 291 required “the existence of an interference, and a claim that ‘never existed’ [due to a statutory disclaimer] cannot form the basis for an interference”); Facebook, Inc. v. Skky, LLC, CBM2016- 00091, Paper 12 at 8 (PTAB Sept. 28, 2017) (precedential as to § II.B.2) (“The Federal Circuit has held consistently that claims disclaimed under § 253(a) should be treated as though they never existed.”). Thus, even though claims of the challenged patent existed at the time the Petition here was filed, we must now treat the challenged patent as if it had never included those claims. Accordingly, no inter partes review will be instituted for disclaimed claims 22, 24, 39, and 40 of the ’950 patent. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). Nevertheless, our analysis continues because not all of the claims challenged in the Petition have been disclaimed by Patent Owner.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Based on our review of the record, we do not construe any limitations or terms of the challenged claims because construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy” and we do not discern any such controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

  • Skill levelSkill level petitioner adoptedOther

    “Here, Petitioner asserts a person of ordinary skill in the art at the time of the ’950 patent would have had “at least a Master’s degree in electrical engineering and two or more years of work experience relating to power electronics and the design of switching power converters, with more experience potentially substituting for education or vice versa.” Pet. 7 (citing Ex. 1003 ¶ 29; Ex. 1009 ¶¶ 35–38; Ex. 1010, 80). Patent Owner does not assert a different level of skill in the art at the time of the alleged invention at this time. See generally Prelim. Resp. Additionally, Dr. Rivas-Davila applies Petitioner’s definition in his declaration. Ex. 2001 ¶ 64. For the purposes of this Decision, we adopt Petitioner’s level of ordinary skill in the art because it appears consistent with (1) the problems addressed in the ’950 Patent and (2) the level of ordinary skill in the art reflected by the prior art of record. See Okajima, 261 F.3d at 1355.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,199,950
• Delta Electronics, Inc. v. Vicor CorporationInstitution denied
  PTAB · May 17, 2024 · IPR2024-00187 · APJ Kara L Szpondowski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 22, and 31–35 were unpatentable under any asserted § 103 ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-Sys., 821 F.3d at 1369. This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combination of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have at least a Master’s degree in electrical engineering and two or more years of work experience relating to power electronics and the design and control of switching power converters, with more experience potentially substituting for education, or vice-versa.” Pet. 14 (citing Ex. 1017, 79; Ex. 1003 ¶ 29).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any term, or decide whether the preamble of claim 1 is limiting, for purposes of this Decision.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner cites to Dr. Hopkins’ Declaration, which repeats nearly verbatim the contentions in the Petition, and then adds testimony that “[t]he resonant period and frequency is what the ’481 Patent refers to as the ‘standard’ operating period and frequency.” Pet. 32 (citing Ex. 1003 ¶ 81). Dr. Hopkins, however, does not provide any citation to the ’481 patent to support this testimony, nor any further explanation as to how or why the resonant period and frequency teaches the “standard operating period and frequency” recited in limitation 1[c]. Therefore, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory 17 As discussed below, Petitioner also relies on this theory for all of the remaining six challenges in the Petition, and does not provide further explanation in any of those challenges. Accordingly, as explained below, each of Petitioner’s remaining challenges is insufficient for the same reasons described here. assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,166,481
• Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution denied
  PTAB · Jan 9, 2024 · IPR2023-01129 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Meta did not show a reasonable likelihood that claims 29, 31–44 were obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, and for the reasons explained below, we determine Petitioner has not shown that there is a 1 Petitioner identifies itself, Meta Platforms, Inc., as the real party-in-interest. Pet. 93. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 7, 2. reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny institution of an inter partes review of claims 29 and 31–44 in the ’611 patent on all challenges included in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 14; Pet. 7. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner contends that “[n]o formal claim constructions are necessary.” Pet. 7. Patent Owner proposes a claim construction for the claim 1 term of “forming a filter” and “filter” which are used in claims 29 and 44. Prelim. Resp. 12. As discussed below, we determine that Petitioner has not met its burden on the merits and, because the construction of these terms is not relevant to that determination, we need not address the construction of the terms that Patent Owner proposes for construction.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “a. Claim 29 We determine that Petitioner has failed to meet its burden to show a reasonable likelihood that Avendano ’880 and Hou would have rendered claim 29 obvious. This determination is based on the evidence and argument presented for limitation [29b], so we solely address this issue below.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,326,611
• Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution denied
  PTAB · Jan 9, 2024 · IPR2023-01083 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 5–9, 12, and 13 were obvious over Avendano ’880 and Hou.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 35 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity. Petitioner’s alternative argument, that “[a]s another example, a calibration also would be applied to the second signal x2 by Hou’s ‘first minimum estimate unit 508’ to generate a first quantity,” also fails. Id. at 36–37. This argument is untenable because Hou’s first minimum estimate unit 508 merely “estimates the minimum for the first electronic sound signal.” Ex. 1008, 5:36–38. Hou does not describe unit 508 as performing a calibration. Nor does Petitioner explain how Hou’s minimum estimate constitutes a calibration. Pet. 36–37. And Petitioner’s expert merely parrots the Petition. Ex. 1003 ¶ 135. Thus, Petitioner’s conclusory assertion is unpersuasive.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We determine below that Petitioner has not met its burden to show a reasonable likelihood that Avendano ’880 and Hou would have rendered independent claim 1 obvious. As the remaining claims all depend from claim 1 and Petitioner’s second challenge only addresses dependent claims, Petitioner’s failure to meet its burden on this challenge is dispositive, and we need not address Ground 2. See Pet. 1.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We determine that we need not construe this term because, for the reasons we explain below, Petitioner has not met its institution burden regardless of the construction of this term. We further determine that no other terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6–7 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition and asserts that “Petitioner generally agrees with this level of skill in the art.” Prelim. Resp. 14 (citing Ex. 1003 ¶¶ 22–23). Based on the current record, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art.” slip op. at 7

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,321,213
• Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution denied
  PTAB · Aug 10, 2023 · IPR2023-00431 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution on both §103 grounds because the petition did not show a reasonable likelihood that the challenged claims required priority assignment and comparison.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. For the reasons set forth below, and pursuant to 35 U.S.C. § 314, we do not institute inter partes review of claims 1–4, 8–11, and 13–16 of the ’787 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “bachelor’s degree in computer science (or a similar degree) with two years of work experience in developing software, including at least some experience with storage, synchronization, and human-computer interaction technologies.” Pet. 6 (citing Ex. 1028 ¶¶ 17, 21). Patent Owner does not 2 The Leahy-Smith America Invents Act (“AIA”) included revisions to § 103 that became effective on March 16, 2013. Because the ’787 patent claims priority, through a continuation application, to a provisional application filed before March 16, 2013, and neither party has argued that the provisions of the AIA apply at this time, we apply the pre-AIA versions of the statutory bases for unpatentability. See Ex. 1007, codes (60), (63). 3 U.S. Publication No. 2007/0174246 A1, published July 26, 2007 (Ex. 1016). 4 U.S. Publication No. 2005/0091289 A1, published April 28, 2005 (Ex. 1020). 5 U.S. Publication No. 2006/0190506 A1, published April 24, 2006 (Ex. 1019). 6 U.S. Patent No. 7,035,847 B2, filed March 15, 2002 (Ex. 1025). 7 U.S. Publication No. 2005/0120082 A1, published June 2, 2005 (Ex. 1026). proposed definition. See generally Prelim. Resp. At this juncture, we determine that the qualifications proposed by Petitioner for an ordinarily skilled artisan are consistent with the level of skill reflected in the Specification and in the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “B. Claim Construction Neither party requests that we expressly construe any claim term. Pet. 6; see generally, Prelim. Resp. At this juncture, we determine that we do not need to expressly construe any claim term for this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We do not find that the Petition presents sufficient reasoning to support why a person of skill in the art would modify Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings. Shappell and Rao simply teach that metadata is sent first and content or raw data is sent second. Petitioner contends that because the metadata is known to usually contain less data than a file and the updated version is newer, Sigurdsson’s priority algorithm should be reconfigured to assign greater priority to the metadata and lower priority to the files. Pet. 23–24; Ex. 1028 ¶ 177. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Pet. 23; Ex. 1028 ¶ 177. There is no explanation provided in the Petition, however, as to why a person of ordinary skill in the art would opt to modify Sigurdsson to assign and compare priorities by reconfiguring the priority algorithm of Sigurdsson when there is the simpler way of using software to simply send metadata first and content second as taught in Shappell/Rao. Absent explanation in the Sigurdsson’s priority algorithm to assign and compare priorities rather than employing the simpler method taught in Shappell/Rao of just sending metadata first, the Petition lacks rational underpinning.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,642,787
• Zhejiang Crystal-Optech Co. Ltd. v. Viavi Solutions Inc.Institution denied
  PTAB · Feb 7, 2023 · IPR2022-01184 · APJ Debra K Stephens · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim would have been obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “8. Conclusion Based on the record before us, we determine Petitioner’s proffered arguments, evidence, and supporting testimony fails to establish a reasonable likelihood that Petitioner would prevail in showing that claims 1–7, 9, 10, 12–14, 17, 18, 20–23, 27, 30, and 31 would have been obvious over Pilgrim, Gibbons, Lairson, and Yoda.” slip op. at 32

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “II. ANALYSIS A. Discretionary Denial – 35 U.S.C. § 314(a) Patent Owner argues that we should exercise discretion to deny institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution (Prelim. Resp. 49–54). Petitioner argues we should not discretionarily deny institution under Fintiv (Pet. 66–67). Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “B. Discretionary Denial – 35 U.S.C. §325(d) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 325(d) because of the Petition’s “reliance upon the secondary references Gibbons, Lairson, and Yoda. Gibbons and Lairson were considered by the Examiner, and Yoda does not contain any meaningful additional disclosure or basis for unpatentability that was not considered by the Examiner” (Prelim. Resp. 21–22). Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged in those grounds would have been obvious as discussed below, we do not reach this issue.” slip op. at 9

  • Skill levelSkill level board ownOther

    “Based on the present record including the disclosure in the ʼ269 Patent, we apply a slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the qualification of “at least” and clarifies some statements (see Pet. 6). More specifically, we determine a POSITA would have had a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with five years of experience in optical element design and optical filters although additional education (e.g., a Master’s degree with exposure to optical element design and optical filters) may substitute for some industrial experience in optical element and optical filter design, and more industrial experience can substitute for a different educational background. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ269 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 11

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,588,269
• Mylan Pharmaceuticals Inc. v. Bausch Health Ireland LimitedInstitution denied
  PTAB · Jan 4, 2023 · IPR2022-01103 · APJ Michael A Valek · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Considering the arguments and evidence of record, we determine that the Petition does not demonstrate “a reasonable likelihood that [P]etitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “14 Because we deny the Petition on the merits, we do not reach Patent Owner’s argument for discretionary denial under 35 U.S.C. § 325(d). Prelim. Resp. 23–39.” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner contends that as of September 15, 2011 (see supra n.1), a person of ordinary skill in the art (sometimes referred to herein as a “skilled artisan”) “had the equivalent of a graduate degree in pharmaceutics or a related field, and knowledge and experience making oral-dosage formulations. This individual could work with other specialists including, e.g., an M.D., clinical pharmacologist, and medicinal chemist.” Pet. 10–11 (citing Buckton Decl. ¶¶ 81–84). For the purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s proposal. Prelim. Resp. 42. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner asserts that the claims do not require any construction, but also states that a person of ordinary skill in the art would have understood the term “inert low moisture carrier,” which appears in claim 1, to include Avicel PH112. Pet. 12. For purposes of the Preliminary Response, Patent Owner “does not challenge the claim construction positions set forth in the Petition.” Prelim. Resp. 41. For purposes of this Decision, we determine that no claim terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,616,097
• Mylan Pharmaceuticals Inc. v. Bausch Health Ireland LimitedInstitution denied
  PTAB · Jan 4, 2023 · IPR2022-01105 · APJ Cynthia M Hardman · IPR · Institution

  The Board denied institution because Mylan did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “On this record Petitioner has not shown a reasonable likelihood of establishing that at least one of the challenged claims is unpatentable as obvious over Shailubhai, Remington, and Mihranyan. We focus our analysis on claim 1’s recitation of “an inert low moisture carrier.”” slip op. at 11

  • BurdenDenied

    “On this record, we find that Petitioner’s reliance on Lai is insufficient to carry its burden for institution. Petitioner and Dr. Buckton generically cite Lai’s first page (page 489), but fail to articulate any specific reason why a skilled artisan would have been motivated to use a low-moisture MCC carrier in a peptide formulation (let alone in the claimed plecanatide formulation). At most, Lai page 489 is equivocal about the impact of moisture on peptides, stating only that, among other factors, moisture “may impact the chemical stability of proteins and peptides in the solid-state.” Id. (emphasis added). Neither Petitioner nor Dr. Buckton adequately explains how this teaching (or any other teaching in Lai) would have informed a person of ordinary skill in the art that peptides were moisture-sensitive, thereby motivating use of a low-moisture MCC carrier.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “to carry its burden for institution. Petitioner and Dr. Buckton generically cite Lai’s first page (page 489), but fail to articulate any specific reason why a skilled artisan would have been motivated to use a low-moisture MCC carrier in a peptide formulation (let alone in the claimed plecanatide formulation). At most, Lai page 489 is equivocal about the impact of moisture on peptides, stating only that, among other factors, moisture “may impact the chemical stability of proteins and peptides in the solid-state.” Id. (emphasis added). Neither Petitioner nor Dr. Buckton adequately explains how this teaching (or any other teaching in Lai) would have informed a person of ordinary skill in the art that peptides were moisture-sensitive, thereby motivating use of a low-moisture MCC carrier.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Dr. Buckton’s testimony does not provide the missing explanation. He merely repeats the Petition’s statement that Lai teaches “peptides in particularly are generally subject to degradation from moisture during storage,” without explaining how Lai supports that conclusion. Buckton Decl. ¶ 104; see also id. ¶ 144. Dr. Buckton also cites Aulton, but again fails to indicate exactly what in Aulton indicates that peptides generally, much less plecanatide specifically, are moisture-sensitive. Id. ¶ 144. Indeed, the cited page of Aulton does not mention peptides at all. See Ex. 1029 (Aulton), 9. On this record, Dr. Buckton’s testimony lacks sufficient explanation and is not persuasive to support Petitioner’s burden for institution. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Verlander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (noting that Board has discretion to accord little weight to expert’s “broad conclusory statements that it determined were unsupported by corroborating references”).” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 9,925,231
• PNC Bank, N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · Apr 27, 2022 · IPR2022-00049 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution for claims 20 and 22 because Petitioner did not show a reasonable likelihood that the asserted combinations rendered them obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “IV. CONCLUSION The Petitioner has not persuasively established that a skilled artisan would have been motivated to combine the cited references so as to render any of the challenged claims unpatentable. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), no inter partes review as to any claim of the ’638 patent is instituted; and” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Pet. 25–27 (emphasis added) (alterations in original). Although this passage is somewhat lengthy, the only reasons provided for combining the relevant teachings of Garcia and Byrne are “to avoid wasting communications resources and adding delays,” “avoid wasting resources and adding delays,” and “reducing wasteful network transmission and delays.” See id. However, the only argument as to the existence of the alleged motivating waste and delay is: “Garcia sends images by ‘a mobile telephone communications network, for example a GSM/GPRS network. . . A POSITA would have known that such networks are bandwidth and resourceconstrained, and that communications over such networks take[ ] time.” Id. at 25 (quoting Ex. 1103, 11:21–12:1). In the Petition, there is no explanation or reasoning to support concluding, based on Garcia’s statement that images are sent using a mobile telephone communications network, that a skilled artisan would recognize waste and delay even if such networks are bandwidth and resource-constrained and that communications over such networks take time. See id. And, there is no explanation or reasoning for concluding that a skilled artisan would recognize that to “check for errors before the submitting” in the manner taught by Byrne would help alleviate waste and delay in Garcia’s system. The only articulated rationale to combine in the Petition is a simple, unelaborated assertion that a skilled artisan would have known that “networks are bandwidth and resource-constrained” and “communications over such networks take time.” This assertion is too general10 and conclusory to accorded much weight and is inadequate to support the finding of rationale to combine. There is no elaboration in the Petition as to what is meant by this sentence. The Petition fails to explain what pertinent knowledge a skilled artisan would have had and how exactly this would have motivated the combination of the relevant teachings of Garcia and Byrne.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312– 19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). There is a “heavy presumption,” however, that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). We determine we need not explicitly construe any claim terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “Preliminary Response and Exhibit 2006); Paper 13 (relating to the Reply); and Paper 17 (relating to the Sur-reply). In each of these motions, the parties seek to protect as confidential certain information that relates to the issue of whether Petitioner has properly identified all the real parties in interest in its Petition. See 35 U.S.C. § 312(a)(2). As we deny the Petition on the merits and do not grant the request to institute an inter partes review, the issue of identification of the real parties in interest to this proceeding is moot. Therefore, we do not reach the arguments and evidence of the parties relating to whether Petitioner identified all the real parties in interest in the Petition, and we make no reference in this Decision to the documents and information that the parties seek to protect as confidential.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,402,638
• Unified Patents, LLC v. Micropairing Technologies LLCInstitution denied
  PTAB · Apr 12, 2022 · IPR2021-01557 · APJ Iftikhar Ahmed · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 6, and 10–23 were unpatentable under the asserted § 103 grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “On this record, we determine that we need not address whether the Unnamed RPIs were improperly excluded because, “even if [they] were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja, IPR2020-00734, Paper 11 at 18. Like in SharkNinja, the Unnamed RPIs here are currently members of Unified and some of them may have been accused of infringement of the ’816 patent, but there is no allegation or evidence that any of those members are barred or estopped from this proceeding.8 And although Patent Owner contends that “Petitioner’s failure to identify members funding its activities as real-parties-in-interest raises estoppel issues,” the only estoppel issue that Patent Owner identifies is estoppel that could potentially arise under 35 U.S.C. § 315(e) in the future. Prelim. Sur-reply 1-2. However, because we deny institution of inter partes review on the merits (see infra § III.F), there is no estoppel triggered under 35 U.S.C. § 315(e) by our decision. In the present proceeding, there is no allegation that Petitioner’s exclusion of the Unnamed RPIs should result in termination of the proceeding or denial of institution of review for any reason other than for the alleged failure to comply with the Board’s rules requiring the identification of RPIs. Additionally, there is no allegation or evidence that any of the Unnamed RPIs is barred or estopped from this proceeding, or that Petitioner purposefully omitted any of the Unnamed RPIs to gain some advantage. We” slip op. at 10

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyNot reached

    “On this record, we determine that we need not address whether the Unnamed RPIs were improperly excluded because, “even if [they] were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja, IPR2020-00734, Paper 11 at 18. Like in SharkNinja, the Unnamed RPIs here are currently members of Unified and some of them may have been accused of infringement of the ’816 patent, but there is no allegation or evidence that any of those members are barred or estopped from this proceeding.8 And although Patent Owner contends that “Petitioner’s failure to identify members funding its activities as real-parties-in-interest raises estoppel issues,” the only estoppel issue that Patent Owner identifies is estoppel that could potentially arise under 35 U.S.C. § 315(e) in the future. Prelim. Sur-reply 1-2. However, because we deny institution of inter partes review on the merits (see infra § III.F), there is no estoppel triggered under 35 U.S.C. § 315(e) by our decision. In the present proceeding, there is no allegation that Petitioner’s exclusion of the Unnamed RPIs should result in termination of the proceeding or denial of institution of review for any reason other than for the alleged failure to comply with the Board’s rules requiring the identification of RPIs. Additionally, there is no allegation or evidence that any of the Unnamed RPIs is barred or estopped from this proceeding, or that Petitioner purposefully omitted any of the Unnamed RPIs to gain some advantage. We” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in in-vehicle infotainment systems.” Pet. 9–10 (citing Ex. 1002 ¶¶ 25–28). Patent Owner does not propose any particular skill level in its Preliminary Response. See generally Prelim. Resp. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’816 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt that level in deciding whether to institute trial.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2021). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Phillips, 415 F.3d at 1315–17. Petitioner identifies certain claim terms that were construed in pending district court litigation. Pet. 12–13 (listing constructions for “application,” “audio source,” “multi-processor system,” and “download a copy of a second/fourth software application”). Patent Owner does not address any of these constructions. See Prelim. Resp. 8. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,953,816

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.